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Filing Canadian Patent Application

1. Filing a Patent Application

This newsletter discusses the criteria used by the Canadian Intellectual Property Office (CIPO) to assess patentability of inventions. In order to be recognized by the CIPO as an invention, the disclosed subject matter has to possess utility, novelty and be non-obvious.

2. Patents in General

A patent is a grant of a property right to the inventor for a limited time. The property right granted by a patent is enforceable only in the jurisdiction that issued the patent. In return for the inventor's disclosure of his invention, the patent grants the inventor a time-limited right to exclude others from making, using, selling, or offering for sale in the issuing jurisdiction the invention as claimed in the issued patent. The inventor must provide a detailed description of how to make and use the invention so that the public may benefit from the detailed disclosures of the patent. Importantly, a patent does not give the owner the right to make, use, sell, or offer to sell the invention as patented; instead the patent only gives the owner the right to exclude others from making, using, selling, or offering to sell the patented invention. This may mean that the patent owner itself cannot make, use, sell, or offer for sale the invention of his patent. For example, if the inventor's patent includes technology that is protected by an earlier-issued patent, the later inventor would be unable to make, use, sell, or offer for sale the invention as described in his patent without the permission of the owner of the previously patented invention. In the Canada, patents are granted for new, useful, and nonobvious inventions. An inventor must apply for a patent by disclosing his invention to the CIPO. The CIPO is responsible for assessing whether the disclosure complies with the applicable patent laws and regulations. When the CIPO is satisfied that the disclosure complies with the applicable patent laws and regulations, including being new, useful, and nonobvious, it will issue a patent to one or more inventors or to the inventors' assignees. While a detailed disclosure of the invention is required of the applicant, it is the formalistic language of the claims which defines the metes and bounds of the protection afforded to the invention by the patent.

3. Patentable Subject Matter

An invention must fall within one of four express categories of patentable subject matter in order to qualify for patent protection: process, machine, article of manufacture, and composition of matter. A "process" is an act or sequence of acts performed upon certain materials to produce a given result, such as the transformation of the materials into a different state. A "machine" is a device or combination of devices by means of which a useful function can be performed. An "article of manufacture" is an object produced or manufactured from raw or prepared materials. A "composition of matter" includes all chemical compositions and mixtures, including gases, liquids, solids, and non-naturally occurring living materials. Patent protection is not available for, among other things, abstract ideas, laws of nature, natural phenomena, or mathematical formulae.

4. Requirement of Novelty

Under Canadian law an invention is considered novel if it is different from already publicly known "prior art." Generally, prior art in Canada includes patents, publications, commercial activities, and public disclosures, such as: (1) Canadian and foreign patents issued before the conception of an invention; (2) Canadian and foreign patents dated more than one year before the filing of a patent application; (3) patents filed before conception of a later invention; (4) publications printed anywhere in the world, (5) sales and offers for sale, and (6) public uses, public displays, and public demonstrations of the invention in Canada. The list of prior art illustrates a one year "grace period" in Canada in which the inventor may file a patent application. The grace period is measured from the inventor's first publication, public use, or sale. A printed publication can serve as prior art if it was generally available and accessible, through the exercise of reasonable diligence, to the segment of the public interested in the subject matter of the invention. Although books and periodicals are the most obvious examples, printed publications also include college theses and the limited distribution of catalogues, booklets, or other documents to members of the relevant trade without obligations of secrecy, such as at a trade show.

5. Requirement of Non-obviousness

Even if a product is not identically disclosed by a single prior art reference, it will be unpatentable if it is obvious in light of the prior art references; that is, if the differences between the product would have been obvious to a person having ordinary skill in the relevant art. A determination of obviousness under Canadian law is based on (1) the scope and content of the prior art, (2) the differences between the prior art and the claim at issue, (3) the level of ordinary skill in the art, and (4) objective evidence of non-obviousness. To rely on a prior art reference as proof of obviousness, the reference must either be in the field of the applicant's endeavour or reasonably pertinent to the particular problem with which the inventor was concerned. Obviousness cannot be established by combining different prior art references to produce the claimed invention, unless some teaching, suggestion, or incentive supported the combination at the time the invention was made. That teaching or suggestion cannot come from the invention itself, or else hindsight would make many inventions obvious. Objective evidence is admissible, in part, to help avoid the use of hindsight in determining obviousness.

Objective evidence includes commercial success of the claimed invention, long-felt need unresolved until the present invention, failure of others to make the invention, copying of the invention by others, and unexpected results. For any one of these factors to be relevant, there must be a sufficiently close relationship between the factor and the claimed invention. Thus, for example, commercial success of a claimed invention is only relevant if there is a nexus between that which is actually sold and commercially successful and what is claimed as the invention.